OPINION
Plaintiff Parfums Givenchy, Inc. (“Givenchy USA”) brought this copyright infringement action against defendant C & C Beauty Sales, Inc. (“C & C Beauty”) pursuant to Section 602(a) of the Copyright Act of 1976, which prohibits the “[i]mportation into the United States, without the authority of the owner of copyright ... of copies or phonorecords of a work that have been acquired outside the United States.” 17 U.S.C. § 602(a). Givenchy USA filed a motion for summary judgment on March 3,1993. The Court took the motion under submission on April 5, 1993, pursuant to the stipulation of counsel. On June 22, 1993, Givenchy USA filed a motion for statutory damages; the Court took that motion under submission on August 25, 1993.
The Court now grants Givenchy USA’s motion for summary judgment except insofar as it seeks reimbursement of attorney’s fees. The court denies Givenchy USA’s motion for statutory damages.
FACTS
Givenchy USA, a New York corporation, is the exclusive authorized distributor of Givenchy perfume products in the United States. The products are manufactured in France by Givenchy USA’s parent company, Parfums Givenchy, S.A. (“Givenchy France”). Givenchy USA is the only party authorized tо import these products into the United States for consumption in this country. One of the products manufactured by Givenchy France and distributed in the United States by Givenchy USA is a perfume marketed under the name “Amarige.” Each bottle of Amarige perfume is packaged in a box, the outside of which displays a two-dimensional artistic design (the “Amarige Box Design”). Employees of Givenchy France created this design in 1991.
On February 27, 1992, Givenchy France sold the United States rights to the copyright in the Amarige Box Design to Givenchy USA. Givenchy USA recorded the copyright in the design with the United States Copyright Office, which issued a registration certificate to Givenchy USA effective March 24, 1992.
During 1992, Givenchy spent over five million dollars advertising Amarige perfume throughout the United States and promoting its image as a high-quality, high-prestige luxury item. The Amarige Box Design is prominently featured in the advertising and is an important part of the overall Amarige perfume product.
*1382 Defendant C & C Beauty is a Florida corporation with its principal place of business in Miami, Florida. It is a self-described importer of “gray market” perfume products. 1 Without Givenchy USA’s authorization, C & C Beauty has been importing into this country and purchasing from third-party, gray-market importers substantial quantities of Amarige perfume products (including the Amarige Box Design), and then distributing them to retail stores. According to Givenchy USA, C & C Beauty’s unauthorized importation and distribution of Amarige perfume in the United States threatens to erode Givenchy USA’s exclusive market and undermine the image of the Amarige perfume product as a high-quality, high-prestige luxury item.
PROCEDURAL HISTORY
Givenchy USA’s present suit against C & C Beauty is closely connected with an earlier suit brought by Givenchy USA in this Court against Drug Emporium, Inc., one of C & C Beauty’s largest customers. In that case, Givenchy USA claimed that Drug Emporium had infringed Givenchy USA’s exclusive right to distribute the copyrighted design that appears on the packaging of Amarige perfume, in violation of Section 602(a) of the Copyright Act.
On September 17,1992, this Court preliminarily enjoined Drug Emporium from continued distribution of the Amarige Box Design. On November 23, 1992, on Givenchy USA’s motion for summary judgment, this Court еntered a permanent injunction against Drug Emporium and awarded Givenchy USA its reasonable attorney’s fees
2
and costs.
Parfums Givenchy, Inc. v. Drug Emporium, Inc.,
No. CV 92-4206 MRP,
The same day that this Court entered a preliminary injunction against Drug Emporium, C & C Beauty filed suit against Givenchy USA in the United States District Court for the Southern District of Florida. C & C Beauty sought a declaratory judgment that its importation and distribution of the Amarige Box Design did not violate Section 602(a) of the Copyright Act, by virtue of the “first sale” doctrine. Givenchy USA then moved to transfer that action to this Court.
On December 18, 1992, Givenchy USA filed the present action. On January 20, 1993, C & C Beauty moved to dismiss this action, or, in the alternative, to transfer it to the United States District Court for the Southern District of Florida. C & C Beauty based its motion on the pendency of the declaratory judgment action it had filed in Florida.
On January 28, 1993, the Florida court issued an order transferring C & C Beauty’s declaratory judgment action to this District. See C & C Beauty Sales, Inc. v. Parfums Givenchy, Inc., No. 92-2157 CIV-MARCUS (S.D.Fla. Jan. 27, 1993). C & C Beauty subsequently withdrew its motion to dismiss or transfer, and has filed an answer to Givenchy USA’s complaint. Givеnchy USA now moves for summary judgment.
DISCUSSION
Summary judgment is proper if “there is no genuine issue as to any material fact and ... the moving party is entitled to a
*1383
judgment as a matter of law.” Fed.R.Civ.P. 56(c). “[A] party opposing a properly supported motion for summary judgment may not rest upon mere allegation or denials of his pleading, but must set forth specific facts showing that there is a genuine issue for trial.”
Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 256,
Givenchy USA’s claim arises under Section 602(a) of the Copyright Act of 1976, which provides:
Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.
17 U.S.C. § 602(a).
The legislative history of this section mаkes clear that, in enacting it, Congress intended to protect copyright owners against the unauthorized importation of copies acquired outside the United States even when such copies are lawfully made:
Section 602 ... deals with two separate situations: importation of “piratical” articles (that is, copies or phonorecords made without any authorization of the copyright owner), and unauthorized importation of copies or phonorecords that were lawfully made.
H.R.Rep. No. 1476, 94th Cong., 2d Sess. 169 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5785 (emphasis added).
The history further states that “the mere act of importation ... constitute^] an act of infringement.” Id. at 170. This is confirmed by Section 501(a) of the Act, which states that “[a]nyone ... who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright----” 17 U.S.C. § 501(a).
By its terms, Section 602(a) sets forth three requirements for a copyright claim: (1) plaintiff must be the “owner of copyright” in the work in question; (2) copies of the work must have been imported into the United States “without the authority of the owner of copyright”; and (3) the imported copies must have been “acquired outside the United States.” Each of these requirements is met here. The certificate of copyright registration in the Amarige Box Design is
prima facie
evidence of the validity of the copyright and of Givenchy USA’s ownership thereof.
See
17 U.S.C. § 410(c);
Apple Computer, Inc. v. Formula Int’l, Inc.,
C & C Beauty makes three arguments in its attempt to defeat summary judgment. First, it argues that Givenchy USA has failed to establish that it has standing to bring a claim under Section 602(a). Second, C & C Beauty argues that the “first sale” doctrine, codified in Section 109(a) of the Copyright Act, exempts it from liability under Section 602(a). Finally, it argues that the Amarige Box Design is not entitled to copyright protection because it is inseparable from the utilitarian articlе to which it is attached. Each of these arguments lacks merit, and Givenchy USA is entitled to summary judgment.
I. Standing
At the outset, C & C Beauty attacks Givenchy USA’s standing to bring its claim under Section 602(a). C & C Beauty points out that Givenchy USA’s evidence concerning the date of the alleged infringement consists solely of an affidavit executed by Rene A. Garcia, vice president of C & C Beauty, stating that C & C Beauty purchased Amarige perfume on February 4 and 9, 1992. *1384 Givenchy USA did not acquire the copyright in the Amarige Box Design until February 27,1992. Since a copyright owner is entitled to sue only for infringement which occurs during the period of ownership, see 17 U.S.C. § 501(b), C & C Beauty contends, Givenchy USA has failed to establish its standing to sue for the infringement at issue in this case. This contention lacks merit.
A. Liability for Distribution of an Infringing Work
It is well settled that the
distribution
of an infringing work subjects the distributor to liability.
See, e.g., Sygma Photo News, Inc. v. High Society Magazine, Inc.,
As discussed elsewhere in this opinion, C
&
C Beauty’s unauthorized importation of Amarige perfume prоducts, including copies of the Amarige Box Design, constitutes copyright infringement under Section 602(a). There is no dispute that C & C Beauty distributed Amarige perfume products after February 27, 1992, the date when Givenchy USA acquired the copyright in the Amarige Box Design. In so doing, C & C Beauty infringed Givenchy USA’s “exclusive right to distribute copies or phonorecords of works manufactured abroad.”
BMC Music v. Perez,
B. Scope of the Assignment
In addition, Givenchy USA has standing to bring this action — for both the initial importation and the subsequent distribution of Amarige perfume — because it received, by assignment from its parent company, • not only the Amarige Box Design copyright but also the right to sue for previously accrued infringement claims.
Although an assignment of a copyright ordinarily is presumed not to convey the right to sue for prior causes of action, this presumption is not conclusive, but instead depends on the particular circumstances of the assignment.
See SAPC, Inc. v. Lotus Development Corp.,
Given these circumstances, it would be unreasonable to conclude that Givenchy France had reserved to itself causes of action accruing during the short time period between the product’s introduction into the United States and the date of the assignment.
See SAPC, Inc.,
*1385 II. The “First Sale” Doctrine
C & C Beauty’s principal defense in this case is the “first sale” doctrine, which is codified at Section 109(a) of the Copyright Act. Section 109(a) states:
Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.
17 U.S.C. § 109(a). This section provides, in essence, that once the copyright owner has transferred ownership of a particular copy of the work, the person to whom the copy has been transferred is entitled to dispose of it by sale, rental, or any оther means. H.R.Rep. No. 1476, 94th Cong., 2d Sess. 79 (1976), reprinted, in 1976 U.S.C.C.A.N. 5659, 5693. C & C Beauty contends that, because the Amarige perfume products at issue in this case were the subject of a valid first sale in France, C & C Beauty’s importation and distribution of the products did not infringe any of Givenchy USA’s rights. C & C Beauty’s contention lacks merit.
A. The Ninth Circuit’s Opinion in BMG Music v. Perez
The Ninth Circuit addressed precisely this issue in
BMG Music v. Perez,
The court disagreed, and held that the first sale doctrine does not provide a defense to an infringement action under Section 602(a) when the copies in question have been manufactured outside the United States.
Id.
at 319. The court based this conclusion on two grounds, which it adopted from
Columbia Broadcasting System, Inс. v. Scorpio Music Distributors,
Defendant’s contentions would be more persuasive were it not for the phrase— lawfully made under this title — in § 109(a). I conclude that the section grants first sale protection to the third party buyer of copies which have been legally manufactured and sold within the United States' and not to purchasers of imports such as are involved here. The protection afforded by the United States Code does not extend beyond the borders of this country unless the Code expressly states. Absent a clearly expressed legislative intent to the contrary, statutоry language must be recognized as conclusive.
Scorpio,
Second, the court in
BMG Music
reasoned that “‘[cjonstruing § 109(a) as superseding the prohibition on importation set forth in ... § 602 would render § 602 virtually meaningless.’”
BMG Music,
Construing § 109(a) as superseding the prohibition on importation set forth in the more recently enacted § 602 would render § 602 virtually meaningless. Third party purchasers who import phonorecords could thereby circumvent the statute, in every instance, by simply buying the recordings indirectly. Moreover, declaring legal the *1386 act of purchasing from a United States importer who does not deal directly with a foreign manufacturer, but who buys recordings which have been liquidated overseas, would undermine the purpose of the statute. The copyright owner would be unable to exercise control over copies of the work which entered the American market in competition with copies lawfully manufacturеd and distributed under this title. This court cannot construe the statute so as to alter the intent of Congress, which has set restrictions on the importation of phonoreeords in order that rights of United States copyright owners can be preserved.
Scorpio,
The facts in this ease are virtually identical to those in
BMG Music,
and this Court is, of course, bound by the Ninth Circuit’s interpretation of the Copyright Act in that case.
3
Moreover, for reasons that will be set forth below, this Court believes that the Ninth Circuit in
BMG Music
reached the proper result, and agrees with the courts’ observation in that case and in
Scorpio
that construing Section 109(a) as superseding Section 602(a)’s prohibition on importation would render Section 602(a) virtually meaningless.
BMG Music,
“Lawfully Made Under This Title”
The
Scorpio
court seems to have conflated two separate grounds for finding that Section 109(a) does nоt apply to copies manufactured abroad. It is unclear from the court’s analysis whether the court meant to state that the United States Code as a whole — and therefore the Copyright Act — does not apply ex-traterritorially, or that the words “lawfully made under this title” in Section 109(a) render that particular section inoperative outside the United States.
See Scorpio,
Absent a clearly expressed statutory intent to the contrary, courts should presume that the United States Code applies only to actions “occurring within, or having effects within,” the United States.
Beechwood Music Corp. v. Vee Jay Records, Inc.,
As for the second proposition, interpreting the words “lawfully made under this title” to mean “legally manufactured in the United States” would contravene Congressional intent. Such an approach “would withhold the first sale defense from any goods lawfully manufactured abroad even if they were imported with the authority of the United States copyright owner — a result that contradicts the policy behind section 109(a) and the terms of section 602(a).”- 1 Paul Goldstein, Copyright § 5.6.1, at 604 (1989).
Furthermore, nothing in the legislative history supports this interpretation of Section 109(a).
See generally
Stephen W. Feingold,
Parallel Importing Under the Copyright Act of 1976,
17 N.Y.U.J. Int’l L. & Pol. 113, 130-33 (1984) (discussing legislative history of first sale doctrine as codified in 1909 and 1976 Copyright Acts). Section 109(a) re
*1387
places the earlier codification of the first sale docti’ine in Section 27 of the 1909 Act,
4
which stated: “[N]othing in this title shall be deemed to forbid, prevent, or restrict the transfer of any copy of a copyrighted work the possession of which has been lawfully obtained.” Act of Mar. 4, 1909, ch. 320, § 27, 35 Stat. 1075, 1084 (1909) (amended 1976). The words “lawfully made” in Section 109(a) are similar to thе words “lawfully obtained” in the former Section 27, which in turn signified that only valid forms of vending
5
could constitute a “first sale” so as to trigger the first sale doctrine.
See Platt & Munk Co. v. Republic Graphics,
In sum, the legislative history of Section 109(a) reveals that the phrase “lawfully made under this title” clarifies what constitutes a “first sale” for purposes of the first sale doctrine; it makes no reference to the location of the manufacture or sale of the goods. Thus, the courts in BMG Music and Scorpio do not appear to have had a sound basis for interpreting that phrasе to mean “lawfully manufactured and sold within the United States.”
B. Reconciling the Importation Right and the First Sale Doctrine
As discussed above, this Court is bound by the Ninth Circuit’s holding in BMG Music and believes that the result in that case was correct. As stated, this Court agrees with the Court of Appeals’ statement that to construe Section 109(a) as superseding the prohibition on importation set forth in Section 602(a) would render that section virtually meaningless. This Court believes, however, that another important rationale exists for holding that the first sale doctrine does not preclude liability for unauthorized importation under Section 602(a) — one that rests firmly on the text and policies underlying the distribution right, the importation right, and the first sale doctrine.
1. Statutory Language
At the outset, the Court notes that the language of several provisions of the Act suggests that Section 602(a)’s importation *1388 right is not limited by the first sale doctrine. First, while the text of Section 106(3) expressly provides that the distribution right is limited by Section 109(a), the text of Section 602(a) provides for no such limitation. See 17 U.S.C. §§ 106(3), 602(a).
Second, Section 602(a) states that unauthorized importation is actionable under Section 501, which provides the remedies for infringement. Section 501, in turn, creates a cause of action for infringement under Section 602 that is distinct from the cause of action for infringement under Section 106(3). Section 501 states: “Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118 or of the author as provided in section 106A(a), or who imports copies or phonoreeords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be.” 17 U.S.C. § 501(a).
Third, Section 602(a) lists exemptions for the importation of limited numbers of copies acquired for personal, scholarly, religious, or governmental purposes. 17 U.S.C. § 602(a). Since such copies will usually be lawfully made gray market goods purchased abroad through normal market channels, applying the first sale doctrine to Section 602(a) would violate the fundamental rule that a statute should be construed so as to avoid making any part of it superfluous.
Estate of Reynolds v. Martin,
2. Legislative History and Policy Underlying Sections 106(3), 109(a), and 602(a)
The legislative history and policy underlying Sections 106(3), 109(a), and 602(a) of the Copyright Act make clear that the first sale doctrine does not provide a defense to aetions based on unauthorized importation under Section 602(a).
(a) The Distribution Right and the First Sale Doctrine
Section 106(3) establishes the distribution right as one of the exclusive rights constituting copyright ownership. It provides:
Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending----
17 U.S.C. § 106. By including all forms of transfer, not just sale, and prohibiting only transfers “to the public,” Section 106(3) effectively embodies the right of first publication. 1 Goldstein, supra, § 5.5. It entitles the copyright owner to decide when, under what circumstances, and for what price he will release copies of his work to the public. 7
The distribution right is not absolute. Once the copyright owner has voluntarily released his work to the public, the distribution right is no longer needed to protect the underlying copyright; at that point, the policy favoring a copyright monopoly for authors gives way to policies disfavoring restraints of trade and limitations on the alienation of personal property, and the first sale doctrine takes effect. 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.12[A] (1993).
The first sale doctrine is codified at Section 109(a), which provides that, “Mot-withstanding the provisions of section 106(3), the owner of a particular copy or phonorecord ... is entitled, without the authority of the copyright owner, to sell or. otherwise dispose of the possession of that copy or phonorecord.” 17 U.S.C. § 109(a). The precise overlap between Section 106(3) and Sec
*1389
tion 109(a) is important in defining the scope of Section 602(a)’s importation right. The distribution right under Section 106(3) includes the right to control not only the “sale or other transfer of ownership” of copies or phonorecords, but also their disposition “by rental, lease, or lending.” The first sale doctrine under Section 109(a), however, is concerned only with those forms of disposition which involve
sale or other transfer of ownership. See
17 U.S.C. § 109(c)
8
; 2 Nimmer & Nimmer,
supra,
§ 8.12[B], at 8-131. This is because, taken together, the distribution right and the first sale doctrine rest on the principle that the copyright owner is entitled to realize no more and no less than the full value of each copy or phonorecord upon its disposition. 1 Goldstein,
supra,
§ 5.5, at 588-89, § 5.6.1, at 598;
see Platt & Munk,
(b) Section 602(a)’s Importation Right
Prior to enactment of the Copyright Act of 1976, copyright owners could not prevent the unauthorized importation of their work into the United States. See Staff of House Comm, on the Judiciary, 87th Cong., 1st Sess., Copyright Law Revision: Report of the Register of Copyright on the General Revision of the U.S. Copyright Law 125-26 (Comm.Print 1961). The 1909 Act prohibited only the importation of piratical copies of copyrighted works; it did not restrict the importation of articles that were initially sold or manufactured under the authority of the copyright owner. See id.; Act of Mar. 4, 1909, ch. 320, § 30, 35 Stat. 1075, 1082 (1909) (amended 1976) (“[T]he importation into the United States of any article bearing a false notice of copyright when there is no existing copyright thereon in the United States, or of any piratical copies of any work copyrighted in the United States, is prohibited.”). Copyright owners relied on contract law, unfair competition law, or trademark law to discourage unauthorized importation of their work. Feingold, supra, at 134-35.
Section 602(a) was enacted in response to concerns expressed by representatives of the printing and recording industries that contractual and other remedies were ineffectual, 10 and that unauthorized importation in *1390 fringed the rights of United States copyright owners. One representative, for example, testified:
Very frequently you run into a situation where there is a copyright proprietor in the United States and copies of the same work — whether it’s a book, or a piece of music, or something else — produced in a foreign country, may be shipped over here without violating any contract of the U.S. copyright proprietor. This is either because ... the [overseas] publisher sold it to an individual who in turn shipped it over here — that obviously doesn’t violate the contract between the [overseas] and the American publisher ... but, as far аs I am concerned, it is clearly infringement of the copyright of the U.S. proprietor.
Staff of House Comm, on the Judiciary, 88th Cong., 1st Sess., Copyright Law Revision Part 2: Discussion and Comments on Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law 213 (comment of Sidney A. Diamond).
Section 602(a) of the 1976 Act addresses these concerns by providing a swift and simple remedy for the unauthorized importation of copies or phonorecords into the United States. It makes the mere act of importation — regardless of sale — an infringement of Section 106(3)’s distribution right, and prohibits unauthorized importation, not only of pirated copies, but also of copies that were lawfully made. H.R.Rep. No. 1476, at 169— 70, reprinted in 1976 U.S.C.C.A.N. 5659, 5785. 11
By providing that the unauthorized importation of copies or phonorecords infringes the distribution right, Section 602(a) effectively gives Section 106(3) an extraterritorial scope. See 1 Goldstein, supra, § 5.6.1.2, at 603, § 5.5, at 588-89. Under Section 106(3), the copyright owner has the right to decide under what conditions, including at what рrice, he will release copies of his work to the public. Where the owner elects to sell copies of his work, the first sale doctrine requires him to — and assumes that he will be able to — realize each copy’s full value to him upon its initial sale. This “full value” — the price at which the copyright owner is willing to sell copies of his work — depends on market conditions and, in today’s global economy, varies from country to country. For example, the owner of a copyright in a sound recording may demand $10 each'to sell 1 million phonorecords of that sound recording in the United States, but may be willing to sell another 1 million phonorecords for $7 each in Australia in order to enter the market there or for some other legitimate business purpose. If the phonorecords originally sold for $7 in Australia are allowed to enter the United States, where they may then be sold again for, say, $8, the United States copyright owner is forced to compete with that price,, and thus is рrevented from receiving the $10 to which he is entitled for each of the phonoreeords initially released into the United States *1391 market. Section 602(a) recognizes that such unauthorized importation effectively circumvents the distribution right.
It should be clear, then, that the first sale doctrine cannot apply to actions such as the present action for infringement under Section 602(a). Sections 106(3), 109(a), and 602(a) all rest on the principle that the copyright owner is entitled to realize the full value of each copy or phonorecord upon its disposition. Applying the first sale doctrine to actions for unauthorized importation of goods manufactured and first sold abroad would violate this principle and defeat Congress’ intent, in enacting Section 602(a), to expand importation protection for copyright owners so as to avoid circumvention of the distribution right. 12
Furthermore, it would be inconsistent with the text of the Copyright Act. As discussed earlier, the distribution right encompasses the right to control not only the “sale or other transfer of ownership” of copies or phonorecords, but also their disposition “by rental, lease, or lending.” 17 U.S.C. § 106(3). The first sale doctrine, however, is concerned only with those forms of disposition that involve sale or other transfer of ownership. See 17 U.S.C. § 109(c); 2 Nimmer & Nimmer, supra, § 8.12[B], at 8-131. Section 602(a) prohibits the mere importation of copies or phonorecords regardless of whether they are actually sold. See H.R.Rep. No. 1476, at 170, 1976 U.S.C.C.A.N. 5786; see also Black’s Law Dictionary 755 (6th ed. 1990) (defining “importation” as “[t]he act of bringing goods and merchandise into a country from a foreign country”); 1 Goldstein, supra, § 5.5.1, § 5.5.2.2, at 593 & n. 20. Thus, like the rights of rental, lease, and lending encompassed by the distribution right, the importation right is not affected by the first sale doctrine.
In the present ease, the Amarige perfume products at issue were manufactured and first sold in France with the authorization of Givenchy USA’s parent company, Givenchy France. Under Section 602(a), Givenchy USA had the right to prevent these products from entering the United States and competing with the identical products authorized to be distributed here. Because Givenchy USA is entitled to receive full compensation for each authorized copy of Amarige perfume, C & C Beauty cannot assert the first sale doctrine as a defense in this action and Givenchy USA is entitled to summary judgment.
III. Separability
C & C Beauty’s final argument is an attack on the eopyrightability of the Amarige Box Design. C & C Beauty contends that the design is not entitled to copyright protection because it is inseparable from the useful article to which it is attached.
See Norris Indus., Inc. v. International Telephone & Telegraph Corp.,
The certificate of registration issued by the United States Copyright Office for the Amarige Box Design is
prima facie
evidence of the validity of the copyright.
See
17 U.S.C. § 410(c);
Apple Computer, Inc. v. Formula Int’l, Inc.,
It is well established that an artistic packaging design or label is entitled to copyright protection.
See Abli, Inc. v. Standard Brands Paint Co.,
Moreover, the Amarige Box Design is physically separable from the perfume with which it is associated and thus does not even raise an issue of “conceptual separability.” Section 101 of the Copyright Act provides that “the design of a useful article” or a work of art that embellishes a useful article is copyrightable to the extent that it is capable of existing independently of the utilitarian aspects of the article. 17 U.S.C. § 101;
see Norris Indus.,
IV. Relief
A. Injunctive Relief
As discussed previously, Givenchy USA has spent more than five million dollars advertising Amarige perfume nationwide and promoting its image as a high-quality, high-prestige luxury item. The Amarige Box Design is prominently featured in the advertising and is an important part of the overall Amarige perfume product. Moreover, Givenchy USA distributes Amarige perfume only to select, upscale retailers.
C & C Beauty’s unauthorized importation of Amarige perfume, and its distribution of such perfume to unauthorized retailers such as Drug Emporium, threatens to cause Givenchy USA irreparable harm by eroding its exclusive market and undermining the image of the Amarige perfume product as a high-quality, high-prestige luxury item.
Cf. Judscott Handprints, Ltd. v. Washington Wall Paper Co.,
Given these circumstances, the Court finds it appropriate to issue a permanent injunction prohibiting C & C Beauty from infringing Givenchy USA’s copyright in the Amarige Box Design and from publishing, selling, marketing, or otherwise disposing of any reproductions of the Amarige Box Design in the United States.
See
17 U.S.C. § 502(a);
see also Universal City Studios, Inc. v. Sony Corp. of America,
B. Statutory Damages and Attorney’s Fees
Givenchy USA’s motion for statutory damages requests an award of $100,000 pursuant to Section 504, which provides that “[ejxcept as otherwise provided by [the Copyright Act],” a copyright owner who prevails on an infringement claim may elect to receive statutory damages in lieu of actual damages and profits. 17 U.S.C. § 504. In its motion for summary judgment, Givenchy USA seeks reimbursement of costs and attorney’s fees pursuant to Section 505, which states that in copyright actions the court may award costs to the prevailing party and, “[e]xcept as otherwise provided by [the Copyright Act], ... may also award a rea *1393 sonable attorney’s fee ... as part of the costs.” 17 U.S.C. § 505. Givenchy USA’s motion for statutory damages must be denied, as must its request for attorney’s fees.
Section 412(2) provides that [i]n any action under [the Copyright Act] ... no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for ... any infringement of copyright commenced after first publication of the work and before the effective date of its registration ... unless such registration is made within three months after the first publication of the work.
17 U.S.C. § 412. This section bars a copyright owner from recovering statutory damages or attorney’s fees for copyright infringement if two conditions are met: (1) the copyright was registered more than three months after the work was first published, and (2) the infringing activity commenced after the date of first publication and before the effective date of registration of the work.
See, e.g., Business Trends Analysts, Inc. v. Freedonia Group, Inc.,
In this case, the certificate of coрyright registration issued to Givenchy USA for the Amarige Box Design states that the work was first published on September 2, 1991 in France, 13 and that registration became effective on March 24, 1992. Givenchy USA has alleged that C & C Beauty infringed its copyright by purchasing Amarige perfume products abroad, importing them into the United States, and reselling them without Givenchy USA’s authorization. Givenchy USA has also presented evidence that the infringing purchases and sales began in February 1992 and continued without interruption through March 1993. Plaintiffs Motion for Statutory Damages, Declaration of Caroline M. Brown, ¶ 5. Thus, it is clear that the copyright in the Amarige Box Design was registered more than three months after first publication, and that the infringing importation first occurred after the date of first publication and before the effective date of registration.
Givenchy USA nevertheless contends that Section 412(2) does not preclude an award of statutory damages and attorney’s fees in this case. Givenchy USA points to the language of Sectiоn 602(a), which provides that the unauthorized importation of copies or phonorecords is “an infringement,” 17 U.S.C. § 602(a), and argues that because C & C Beauty engaged in numerous importations of Amarige products, it also “commenced” numerous “infringementfs]” within the meaning of Section 412(2). Therefore, Givenchy USA concludes, Givenchy USA is entitled to statutory damages and attorney’s fees for importations that occurred after the registration of the Amarige Box Design.
Givenchy USA’s argument is unpersuasive. Numerous courts have rejected it, and held that the first act of infringement in a series of ongoing separate infringements “commenee[s]” one continuing “infringement” under Section 412(2).
See Mason v. Montgomery Data, Inc.,
This Court finds such a distinction immaterial. The Copyright Act defines copying, or the creation of a derivative work, as an infringement separate from that of distribution, see 17 U.S.C. §§ 106, 501(a); following Givenchy USA’s reasoning, the courts in Mason, Singh, Whelan, and Johnson could just as easily have held that a new infringement “commenced” under Section 412(2) each time the defendant infringed a separate provision of the Copyright Act.
Furthermore, the reasoning in these cases is consistent with the plain language and legislative history of Section 412(2) and thus applies equally to the present case. In
Singh,
for example, the court acknowledged that “[e]aeh separate act of infringement is, of course, an ‘infringement’ within the meaning of the statute, and in a literal sense perhaps such an act might be said to have ‘commenced’ (and ended) on the day of its perpetration.”
The word “infringement” can be used in two senses. As noted, it can mean both a single act of infringement, and it can also mean several or continuous or repeated acts of infringement. However, it would be peculiar if not inaccurate to use the word “commenced” to describe a single act. That verb generally presupposes as a subject some kind of activity that begins at one time and continues or reoccurs thereafter.
Id.; see also Mason,
The court in
Singh
further noted that the legislative history suppоrts a construction based on the ordinary meaning of the text of Section 412(2).
Section 412. Registration as Prerequisite to Certain Remedies
The need for section 412 arises from two basic changes the bill will make in the present law.
(1) Copyright registration for published works, which is useful and important to users and the public at large, would no longer be compulsory, and should therefore be induced in some practical way.
Under the general scheme of the bill, a copyright owner whose work has been infringed before registration would be entitled to the remedies ordinarily available in infringement cases: an injunction on terms the court considers fair, and his actual damages plus any applicable profits not used as a measure of damages. However, section 412 would deny any award of the special or “extraordinary” remedies of statutory damages or аttorney’s fees where ... infringement commenced after publication and before registration (unless registration has been made within a grace period of three months after publication). These provisions would be applicable to works of foreign and domestic origin alike.
.... With respect to published works, clause (2) would generally deny an award of [statutory damages and attorney’s fees] where infringement takes place before registration. As an exception, however, the clause provides a grace period of three months after publication during which registration can be made without loss of remedies; full remedies could be recovered for any infringement begun during the three months after publication if registration is made before that period has ended. This exception is needed to take care of newsworthy or suddenly popular works which may be infringed almost as soon as they are published, before the copyright owner has had a reasonable opportunity to register his claim.
*1395 H.R.Rep. No. 1476, 94th Cong., 2d Sess. 158 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5774.
This passage makes clear that because registration would no longer be compulsory under the 1976 Copyright Act, Congress sought to induce it by denying the “extraordinary” remedies of statutory damages and attorney’s fees where copyright owners fail to register their work in a timely manner. Allowing such remedies where an infringing act occurs before registration and recurs after registration would defeat this purpose.
See Singh,
Here, Givenchy USA failed to register the copyright in the Amarige Box Design within the three-month grace period permitted under Section 412(2). C & C Beauty commenced its infringing importation before the effective date of registration; after that date, it repeated the same act each time, using the same copyrighted material. These acts constitute a series of ongoing infringements which commenced with the first act of importation in February 1992.
See Mason,
CONCLUSION
Givenchy USA has established C & C Beauty’s liability under 17 U.S.C. § 602(a) for unauthorized importation of copies of the Amarige Box Design and is entitled to a permanent injunction under 17 U.S.C. § 502(a). Givenchy USA’s motion for summary judgment is hereby granted except insofar as it seeks reimbursement of attorney’s fees.
Givenchy USA’s motion for statutory damages is hereby denied.
Notes
. "Gray market” goods are goods that are intended to be sold outside the United States but which are imported into this country without the consent of the owner of the United States trademark or copyright associated with the good.
. It is unclear from the record in the earlier lawsuit whether Drug Emporium's infringing activity "commenced” before the effective date of registration of the Amarige Box Design, in which case it could have been argued that Givenchy USA would not have been entitled to an award of attorney's fees. See 17 U.S.C. § 412(2) and discussion infra of statutory damages and attorney's fees, at Section IV.B of this opinion. However, Drug Emporium never contended that its infringing activity commenced before the effective date of the registration of the Amarige Box Design, nor did it object to the award of attorney's fees.
In the present case, C & C Beauty did not even challenge Givenchy USA's entitlement to attorney's fees until it filed a “Supplemental Memorandum of Points and Authorities in Opposition to Plaintiff’s Motion for Summary Judgment” on August 9, 1993, over four months after Givenchy USA had filed its reply in support of its motion for summary judgment.
. A number of other district courts have also refused to apply the first sale doctrine to actions under Section 602(a) for unauthorized importation of copies or phonoreeords manufactured abroad.
See Original Appalachian Artworks, Inc. v. J.F. Reichert, Inc.,
. Section 109(a) restates, but does not expand, the first sale doctrine as established by Section 27 of the 1909 Act and court decisions thereunder. See H.R.Rep. No. 1476, at 79, reprinted in 1976 U.S.C.C.A.N. 5659, 5693.
. Section 1(a) of the 1909 Act provided that a copyright owner had the exclusive right "[t]o print, reprint, publish, copy, and vend the copyrighted work.” Act of Mar. 4, 1909, ch. 320, § 1(a), 35 Stat. 1075, 1075 (1909) (amended 1976).
. The words "lawfully obtained” in Section 27 оf the 1909 Copyright Act did not refer to the locality of the first sale.
. In addition, the distribution right supplements the reproduction right, 17 U.S.C. § 106(1), by ensuring that the copyright owner can prohibit public distribution of her work, not only if it occurs through unauthorized reproduction, but also if the owner's own copies are stolen or otherwise wrongfully obtained and then publicly distributed. 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.12[A] (1993).
. Section 109(c) provides:
The privileges prescribed by subsections (a) and (b) do not, unless authorized by the copyright owner, extend to any person who has acquired possession of the copy or phonorecord from the copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership of it.
. In
Platt & Munk,
for example, the court considered, under the 1909 Act, "whether an unpaid manufacturer of copyrighted goods, which are alleged to be defective by the copyright proprietor who has ordered them, may sell them in satisfaction of his claim for the contract price without infringing the 'exclusive right' of the proprietor to 'publish ... and vеnd the copyrighted work.’ ”
Id. at 854 (citations and internal quotation marks omitted).
. See Staff of House Comm, on the Judiciary, 88th Cong., 1st Sess., Copyright Law Revision Part 2: Discussion and Comments on Report of *1390 the Register of Copyrights on thе General Revision of the U.S. Copyright Law 212 (Comm.Print 1963) (comment of Horace Manges: "When a U.S. book publisher enters into a contract with a British publisher to acquire exclusive U.S. rights for a particular book, he often finds that the English edition, for instance, of that particular book finds its way into this country. Now it’s all right to say, 'Commence a lawsuit for breach of contract.' But this is expensive, burdensome, and, for the most part, ineffective.”); id. at 213 (comment of Sidney A. Diamond), 232 (comment of American Book Publishers Council, Inc. and American Textbook Publishers Institute), 275 (comment of Walter J. Derenberg), 327 (comment of Horace Manges).
. The House Report accompanying the 1976 Act states:
Section 602 deals ... with two separate situations: importation of "piratical” articles (that is, copies or phonorecords made without any authorization of the copyright owner), and unauthorized importation of copies or phonorecords that were lawfully made. The general approach of section 602 is to make unauthorized importation an act of infringement in both cases....
Section 602(a) first states the general rule that unauthorized importation is an infringement merely if the copies or phonorecords "have been acquired outside the United States”....
The second situation covered by section 602 is that where the copies or phonorecords were lawfully made but their distribution in the United States would infringe the U.S. copyright owner’s exclusive rights.... [T]he mere act of importation in this situation would constitute an act of infringement and could be enjoined.
H.R.Rep. No. 1476, at 169-70, reprinted in 1976 U.S.C.C.A.N. 5659, 5785-86.
. This rationale does not apply where copies or phonorecords of a copyrighted work are manufactured and first sold in the United States, exported, and then brought back into the United States.
See Cosmair, Inc. v. Dynamite Enterprises, Inc.,
. Section 412 is "applicable to works of foreign and domestic origin alike." H.R.Rep. No. 1476, 94th Cong., 2d Sess. 158 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5774. Thus, the fact that the Amarige Box Design was created and first published in France is irrelevant.
. Givenchy USA is, of course, entitled to seek actual damages and profits. 17 U.S.C. § 504(b).